Tuesday, 19 August 2014

T 2182/10 - Translation of prior art documents

Old Style Labeling Equipment

This opposition appeal concerns a labeling device. Two Japanese
language documentsD13(O) and D14 were
filed during the opposition proceedings.
Translations
were filed during the appeal period, first a machine translation later followed by a certified translation. For
document D13(O), machine translation D13(O)' was filed about a month
before oral proceedings;a certified
translation D13(O) " was filed three working days before the oral
proceedings.

The machine translation is quite reasonable, but nevertheless provide some puzzling sections. For example, Claim 1 according to the main requests comprises 'a continuous paper tensioning device'. This feature is found in the guide rollers 7 of D13(O). The machine translation of the section of D13(O) that relates to guide rollers 7 reads as follows:

Fig. 6
shows the outline composition of this conventional kind of Label Printer, and 1

A printer
body, The continuous paper for label printing in 2, the paper feed motor

with which
3 consists of stepping motors, The platen to which the step drives of 4 are

carried out
by the paper feed motor 3, and the printing beef fat 5 and 6 which 5 is

provided in
the opposed position of a platan and prints label data to the continuous

paper 1 are
formed in the latter part of the printhead 5, and the cutter mechanism

which cuts
the printed paper 2, and 7 The guide idler of the paper 2, It is a keyboard

with which
the sensor for positioning of a label is allocated 8 and a numeric key, an

issue key,
a feed key, etc. are allocated 2 .

If the
issue key of the keyboard 9 is operated where issue number of sheets is set up

while
carrying out a deer and inputting label data, the paper feed motor 3 operates
and

the platen
4 rotates counterclockwise, and it will be conveyed while the continuous

paper 2 is
guided to the guide idler 7 by this.

This is the corresponding part in the certified translation

In FIG. 6, which shows schematically the
configuration of a conventional label printer of this type, the reference
numbers denote the following:

1... printer body

2... continuous form for label printing

3... paper feed motor consisting of a stepping
motor

4... platen driven stepwise by the paper feed
motor 3

5... print head provided opposite the platen
and serving to print label data on the continuous form 1

6... cutter mechanism provided subsequent to
the print head 5 and serving to cut the form 2 on which printing has been
completed

7 . . . guide rollers for the form 2

8... sensor for positioning of labels

9... keyboard on which are arranged numeric
keys, an “issue” key, a “feed” key, etc.

Once label data has been input and the number
of labels to issue has been set, then, if the “issue” key on the keyboard 9 is
operated, the paper feed motor 3 operates and the platen 4 is rotated
anticlockwise, with the result that the continuous form 2 is transported while
being guided by the guide rollers 7.

Even though the machine and certified translations were provided relatively shortly before Oral proceedings, the Board admits the translations into the proceedings. It does not allow the first auxiliary requests filed at the oral proceedings, as it does not prima facie overcome D13(O).

Sections relating to document D14 have been omitted.

Reasons for the Decision

(...)
2. Late filed documents

Documents
D13(O) and D14 were filed during the opposition proceedings after the
nine months opposition period. They were therefore regarded as late
filed so that the Opposition Division applied the criteria of prima
facie relevance for deciding on their admission in the proceedings,
which was contested by the respondent.

The translations D13(O)',
D13(O)" and D14" were filed by the appellant during the appeal
proceedings so that they were subject to the discretionary power of the
Board for their admission in the proceedings. D14' was introduced by the
Board with the annex. The respondent contested their admission.

D7A
was introduced by the Board to be used instead of D7. As a matter of
fact, D7A is a prior art document according to Article 54(2) EPC and,
hence, can be used for assessing inventive step of the claimed
subject-matter, contrary to D7. The admission of D7A in the proceedings
was not contested by the parties.

2.1 Admission of document D13(O)

The
appellant contested the Opposition Division's decision to not admit
D13(O) in the proceedings. The Opposition Division held that prima facie
some of the features of claim 1 were not present or suggested in the
document (impugned decision, points 11 and 11.1).

As put forward
by the Board in the annex, point 6.1.1, it appears that the Opposition
Division considered only novelty for assessing the prima facie relevance
(see also point 5 of the minutes of the oral proceedings before the
Opposition Division). However, inventive step is also one of the
conditions in order to assess the prima facie relevance of a document.
Since this had not been done, the Board informed the parties in the
annex that the prima facie relevance of document D13(O) would have to be
re-considered for the Board to decide when exercising its discretionary
power to admit it or not in the proceedings. The Board also further
emphasized that, contrary to the written respondent's allegation, it
could not find any hint in the impugned decision that the Opposition
Division considered the disclosure of D13(O) as not going beyond that of
D1-D12.

During the oral proceedings before the Board, the
respondent, referring to Rule 3(3) EPC, put forward that a document
filed in a language other than an official language of the EPO should be
disregarded if a translation was not filed in due time. Since a
translation of D13(O), especially the certified translation, was filed
very late, i.e. only three working days before the oral proceedings,
D13(O) should be disregarded and, hence, not admitted in the
proceedings.

The Board could not share the respondent's view for
the reason put forward by the appellant that a translation was not
required for assessing that D13(O), in view of the English abstract and
the figures, discloses the same solution as in the contested patent of
reversing the feeding of the paper to be printed for exactly the same
purpose of avoiding processing waste (D13(O), "Purpose" and last three
lines of the abstract, figures 5 and 6; contested patent, [0034]). This
disclosure of D13(O) was indeed relevant when assessing inventive step
of the claimed subject-matter as can be derived from the following.
Furthermore, regarding the filing of a translation, the Board merely
invited the appellant to do so if in its possession without setting a
time limit so that the conditions given in the last two sentences of
Rule 3(3) EPC did not apply.

Therefore, the Board, applying its
discretionary power, decided to admit D13(O) in the proceedings due to
its prima facie relevance.

2.2 Translation documents D13(O)' and D13(O)"

In
the annex to the summons to oral proceedings, the Board invited the
appellant to provide, if in its possession, a proper translation of
D13(O) in one of the official languages of the EPO.
In reaction,
the appellant filed a machine translation in English (=D13(O)') with its
letter dated 17 April 2014, i.e. around one month before the oral
proceedings, and a certified translation in English (=D13(O)") with its
letter dated 16 May 2014, i.e. three working days before the oral
proceedings.
During the oral proceedings, the respondent contested
their admission in the proceedings. It argued that a machine
translation D13(O)' was not enough to properly and fully understand an
original document and that the certified translation D13(O)" should have
been filed earlier than three working days, i.e. de facto only two
working days, before the oral proceedings. Because of this extremely
short time available, it was not in a situation to consider and discuss
the new document D13(O)" with its client and to react appropriately.
Furthermore, no passage of the translations had been cited by the
appellant so that it was left with studying the complete new documents
D13(O)' and D13(O)" at a very late stage in the proceedings. The
respondent further added that the certified translation D13(O)" should
have been filed in due time, in particular in view of the fact that six
years elapsed from the beginning of the opposition proceedings (Rule
3(3) EPC).

The Board could not share the respondent's view for the
reasons put forward by the appellant during the oral proceedings. A
translation of a prior art document in an official language of the EPO
can be submitted at a stage later than the filing of the original
document, as foreseen by Rule 3(3) EPC. Furthermore, the machine
translation D13(O)' was already available to the respondent more than
one month before the oral proceedings so that it had sufficient time to
discuss its complete content with its client and to react accordingly.
The quality of the machine translated document was at such a high level
that a skilled reader could readily understand its technical content
without difficulty. This holds all the more true when considering also
the figures, in particular figure 5, of D13. The possible linguistic
errors in D13(O)' were no obstacle to the understanding of its
disclosure. Finally, in view of the discussions during the oral
proceedings, the later filed certified translation D13(O)" did not add
any technical information with respect to D13(O)'.

Further, the
Board could not accept the respondent's approach to simply ignore
D13(O)' filed one month before the oral proceedings, since, as derivable
from the invitation to file a translation in the annex, it was aware
that it could not be excluded that the Board would admit a translation
of D13(O) in the proceedings.

For the above reasons, the Board decided to admit the translation documents D13(O)' and D13(O)" in the proceedings.

(...)

3.4 During the
oral proceedings, the respondent further argued that the case should be
remitted in view of the admission of the certified translation D13(O)",
which was filed only two working days before the oral proceedings.

The
Board did not share the respondent's view for the reasons given by the
appellant. As already pointed out under point 2.2 above when discussing
the admission of D13(O)' and D13(O)" in the proceedings, a machine
translation of D13(O) was already available to the respondent more than
one month before the proceedings in which all the necessary technical
information was clearly and readily available to a skilled reader.
D13(O)" did not include any additional technical information. The
argument of only two working days leading to a lack of time for the
respondent to revert and discuss the matter with the client could
therefore not be followed. The appellant further cited T 557/94 (not
published in OJ EPO, point 1.3 of the reasons) to support the fact that,
even in case where documents are filed late in appeal, the Board can
still decide to not remit the case to the department of the first
instance.

In view of the above, the Board decided that the invoked
reasons could not justify to remit the case to the department of first
instance.

In the following, it is
essentially referred to D13(O) (abstract and figures) and D13(O)' since,
as already indicated above when discussing admissibility of the
documents, D13(O)" does not add any technical information to what could
be derived from D13(O)'.

(a) Closest prior art D13(O)
D13(O)
relates to labelling and printing machines on continuous paper, i.e. a
neighbouring technical field to that of claim 1 of printing machines on
adhesive tape, and intends as indicated in the following to solve the
same problem of the contested patent (cf. paragraphs [0005] and [0034]),
of avoiding processing waste. Therefore, the Board considers that
D13(O) is, like D14, an appropriate starting point for assessing
inventive step, contrary to the respondent's view.

As recalled by
the Board in the annex, point 9.1, inventive step must be given
irrespective of which of the available documents is selected as closest
prior art, as long as it belongs to the relevant technical field. The
respondent had therefore to expect that inventive step would be
discussed at the oral proceedings in view of other documents than D14,
at that time considered as being the best starting point, should it be
concluded that the objection based on D14, preliminarily held valid by
the Board, would not hold. This is all the more true since many other
objections of lack of inventive step had been raised by the appellant.
In particular, D13(O) had also been regarded as a possible starting
point for inventive step in the statement of grounds of appeal, point
5.3.8, and the Board further explicitly informed the parties that the
non-admission of D13(O) in the proceedings by the Opposition Division
would have to be re-considered in view of its possible relevance for
inventive step (annex, point, 6.1.1). Consequently, the respondent could
not be surprised that inventive step was also discussed at the oral
proceedings on the basis of D13(O).

(b) Disclosure of D13(O)
D13(O) discloses in the wording of claim 1 a labelling machine for printing labels, comprising:

- a tape reel of continuous paper (2) from which the labels are formed;
- a reel unwinding system comprising at least an unwinding roll (see figure 6) and a continuous paper tensioning device (7);
-
a printing group (4, 5), comprising a printing system wherein the
contact between the print head (5) and the continuous paper to be
printed (2) is carried out by a driving roll (4), which cyclically
inverts the rotation direction by the action of a paper feed motor (3);
- a cutting system (6) comprising:
-
a cutting blade (6) which moves perpendicularly to the direction of the
continuous paper to be cut, from which the labels are obtained;
- a counter-blade (see figure 5);
the cutting system (6) being adjacent to the printing group (4, 5) (D13(O), abstract and figures 5-6).

The
translations D13(O)' and D13(O)" merely confirm the above recited
disclosure of D13(O), i.e. the technical information available from the
English abstract and figures 5-6. During the oral proceedings, at the
very start of the discussion on inventive step in view of D13(O), the
respondent, asked by the Board, stated that it understood the technical
content provided in the late filed translation D13(O)" so that it did
not need time to study the document. It also added that it would request
an interruption of the oral proceedings, in case it would consider
necessary to be allocated more time to further study D13(O)", which it
did not do.

(c) Distinguishing features

D13(O) does not disclose the following non-optional features of claim 1:

(i)
- the cutting blade has the cutting edge inclined of an angle comprised
between 2° and 45°, preferably between 2° and 30° with respect to the
tape to be cut;
(ii) - the blade and counter-blade cutting surfaces are covered with solid anti-adhesives;
(iii) - the machine comprises an applying pad;
and
(iv) the machine is for printing and applying labels on containers;
(v) an adhesive tape reel with a tape adhesivized on the internal side of the reel; and
(vi) the driving roll is of anti-adherent material.

As
argued during the oral proceedings, the respondent considers that
D13(O) concerns the printing of forms having always the same format on
continuous paper, while claim 1 on the contrary relates to printing
"labels" of different formats and texts on adhesive tape to be applied
on containers.
The Board, however, following the appellant's view,
considers that these arguments do not disqualify D13(O) as an
appropriate starting point for inventive step for the reasons given
under point (a) above and, further, that the term "label" as such cannot
be seen as leading to a distinguishing feature over D13(O) since it has
a broad meaning and, hence, also encompasses the type of "label"
disclosed by D13(O) (cf. abstract). The respondent's argument that the
claimed machine aims at printing different label formats and/or texts
cannot be regarded as concerning a distinguishing feature over D13(O),
since, as referred to by the Board during the oral proceedings, a
corresponding feature is not included in claim 1 of the main request.

The
respondent is further of the opinion that, in addition to the above
features, D13(O) does not disclose that the cutting system is adjacent
to the printing group.

The Board cannot share the respondent's
view for the reasons put forward by the appellant during the oral
proceedings that "adjacent" does not mean "directly adjacent" in the
sense that the cutting system and the printing group would be in contact
or located within a specific distance from each other. The term
"adjacent" has indeed a broad meaning and, hence, also encompasses the
constructional design shown in figure 5 of D13(O), in which the cutting
mechanism (6) is "adjacent" to the printing group (4, 5). This feature
could therefore not be regarded as a distinguishing feature of the
subject-matter of claim 1 over the machine known from D13(O).

(d) Technical effects of the distinguishing features

The
technical effects of features (i), (ii) and (iii) are already discussed
under point 4.2.1.(d) above. The technical effect of features (i) and
(ii) is to avoid any build-up of adhesive residues both on the blade and
on the counter-blade. The technical effect of feature (iii) is to apply
the label onto the product.

As discussed during the oral
proceedings the technical effect of features (iv), (v) and (vi) is
regarded as to render the machine suitable for printing and applying
labels of adhesive tape on containers.

(e) Problems to be solved

The
first partial problem derived from the effect of features (i) and (ii)
on one side and the second partial problem derived from the effect of
feature (iii) on the other side are already given under point 4.2.1.(e)
above.

With respect to features (iv), (v) and (iv), as put forward
by the appellant during oral proceedings, the third partial problem to
be solved is regarded as to render the machine of D14(O) suitable for
using adhesive tape to be applied on containers.

(f) Obviousness

With
respect to features (i) and (ii), the skilled person, when combining
D7A with D13(O) will, contrary to the discussion under point 4.2.1.(f)
above, keep this time the inverting mechanism of D13(O) since the latter
is not linked to the cutting mechanism but rather intends to reversely
feed the paper in order to bring the leading edge of the paper (2) back
to the printing position for avoiding waste (D13(O), abstract, "without
cutting in the halfway"; confirmed by D13(O)', page 1, line 28 to page
2, line 15 and D13(O)", page 2, line 24 to page 3, line 25). The skilled
person will find no technical difficulty to apply the solution known
from D7A to the cutting mechanism of D13(O) so that features (i) and
(ii) do not support an inventive step.

The respondent's argument
that the skilled person would rather look in D5 for a solution to the
problem derived from the cutting mechanism since, inter alia, D5 relates
to a linerless label like D14, cannot be followed since this does not
prevent the skilled person from contemplating the combination of D7A
with D13(O).

For the same reasons as given under point 4.2.1.(f) above, feature (iii) cannot support an inventive step.

If,
as discussed during the oral proceedings, the skilled person is,
depending on circumstances, faced with the problem of adapting the
machine of D13(O) for the use of adhesive tape corresponding to feature
(v), he will use and apply his common general knowledge to prevent the
tape from sticking to the contacting parts of the machine. By doing so
he will implement the necessary constructional measures and come up with
solutions according to features (iv) and (vi) in an obvious manner. As
put forward by the appellant, when adapting the machine of D13(O), the
skilled person will also immediately consider of inverting the reel
shown in figure 6 of D13(O) in order to obtain the printing face of the
tape in front of the printing head (5) within the framework of his
common general knowledge. Therefore, features (iv), (v) and (vi) cannot
support an inventive step.

In addition, as discussed during the
oral proceedings, the machine of D13(O) is suitable for printing a
single page/label. It is indeed computer-controlled and the number "N"
of pages/labels to be printed can be set to "1", which is in fact the
value by default. Printed single pages/labels are unambiguously
applicable to containers (see D13(O)', page 2, line 46 to page 3, line
10 or D13(O)", page 4, last paragraph).

As a result of the above,
the skilled person starting from D13(O) and using the teaching of D7A
together with his common general knowledge will arrive at the claimed
subject-matter in an obvious manner (Article 56 EPC).

5. First auxiliary request - Admissibility in the proceedings

5.1 The respondent filed the first auxiliary request at the very beginning of the oral proceedings.As
a result of the late filing, the admission of the first auxiliary
request in the proceedings is subject to the discretionary power of the
Board as set out in Article 13(1) RPBA.

5.2 Amendments (Articles 123(2) and (3) EPC)
Claim
1 of the first auxiliary request corresponds to independent process
claim 16 of the patent as granted; dependent claims 2-9 of the first
auxiliary request are based on dependent claims 17-24 of the patent as
granted.

The requirements of Articles 123(2) and (3) EPC are therefore fulfilled. This was not contested by the appellant.

5.3 General arguments

5.3.1
The respondent argued that, since claim 1 of the first auxiliary
request corresponds to claim 16 of the patent as granted, i.e. has been
in the proceedings from the very beginning, and has never been discussed
exhaustively, neither in opposition nor in appeal proceedings (see
points 8.2 and 9.2 of the annex), the first auxiliary request should be
admitted and the case be remitted to the department of first instance
for further prosecution on the basis of this request in order to
preserve the respondent's right of two instances.

It also added
that first auxiliary request should be admitted in reaction to the
admission of the late filed translations of D13(O) and D14 in the
proceedings.

5.3.2 The Board, however, cannot find in the Rules of
Procedure of the Boards of Appeal or the EPC, as apparently suggested
by the respondent, a mechanism of automatism that would force the Board
at the oral proceedings to admit any late filed request once a late
filed document would have been admitted in the proceedings. In fact, for
each late filed submission, be it a document or a request, the Board
has to exercise its discretionary power based on applying criteria
independently in order to ensure objective decisions. There is indeed no
absolute right of admissibility of requests (R 1/13, not published in
OJ EPO).

In fact, for the reasons already given under point 2
above, the late filed translations of D14 and D13(O), a fortiori the
documents D14 and D13(O) themselves, could not be regarded as being new
facts and/or evidence coming as a surprise to the respondent at the oral
proceedings before the Board which would justify to admit late filed
auxiliary request(s).

As already put forward under point 3.3 above
and again argued by the appellant during the proceedings, there is no
absolute right for a party to have an issue decided by two instances.
In
the present case, in relation to the requirement of procedural economy,
the Board examined, as indicated to the parties during the oral
proceedings, whether the new late filed request would be prima facie
allowable in that it overcomes objection(s) regarded as validly raised
against the main request and does not raise any new issues.

Consequently,
during the oral proceedings, the discussion on admissibility of the
late filed auxiliary request(s) focused on whether the objection of lack
of inventive step starting from D13(O) raised against claim 1 of the
main request appeared prima facie overcome or not.

5.4 Prima facie overcoming inventive step objection(s)

5.4.1 The respondent argued that the following feature of claim 1:

"the
tape (5) enters the cutting system (2) moving in a direction
perpendicular to the cutting blade (2a); the blade (2a) cuts the tape
maintaining a preferably constant inclination; the contact point between
the blade (2a) and counterblade (2b) during the cut moves transversally
in a continuous way through the tape section (5)"

would enable prima facie to overcome the objection of lack of inventive step.

It
considered that none of the documents D13(O) and D7A discloses a
constant inclination of the blade as claimed. The contested patent, as
shown in figure 2, more particularly the top view, clearly shows that
the cutting blade (2a) is inclined with respect to the moving direction
of the tape or to the counterblade (2b), the latter being in a plane
perpendicular to the moving direction of the tape. This inclination of
the cutting blade (2a) with respect to the moving direction of the tape
has the technical effect to obtain a tape cut perpendicularly, while
moving. It has the advantage of obtaining a perpendicular cut, i.e. a
rectangular label, without having to stop the machine or to implement an
additional cutting station.

5.4.2 The Board could not share the
respondent's view for the following reasons put forward by the appellant
during the oral proceedings.

The respondent's interpretation that
the feature of claim 1 "preferably constant inclination" has the
meaning that the blade is necessarily inclined but "preferably" at a
constant angle over all its length cannot be followed. Indeed, due to
the word "preferably" used, this feature can also be seen as optional,
i.e. claim 1 also encompassing blades with no inclination. Such a
feature, which can be considered as optional, cannot support inventive
step.

Furthermore, the inclination shown in figure 2 of the
contested patent, i.e. perpendicularly to the moving direction of the
tape, is not included in claim 1. It is in fact not specified in claim 1
how or about what the blade is to be inclined. D7A, figure 1, also
discloses an inclined mobile blade (2a) about an axis perpendicular to
the plane of the sheet so that this feature is also known from D7A. When
implementing the solution of the cutting mechanism of D7A into the
machine of D13(O), the skilled person will certainly envisage to incline
the cutting blade accordingly, arriving at the claimed subject-matter
in an obvious manner.

Finally, contrary to the respondent's view,
although explicit from claim 1 that the tape is moving when entering the
cutting mechanism, the claim is silent on whether the tape actually
moves or not during the actual cutting process. Therefore, the alleged
technical effects and/or advantages put forward by the respondent of
obtaining a rectangular label without having to stop the machine or to
implement an additional cutting station are not to be considered since
not based on features defined in claim 1.

Consequently, as
indicated during the oral proceedings, claim 1 of the first auxiliary
request does not appear prima facie to overcome the objection of lack of
inventive step raised against claim 1 of the main request. The Board
thus decided to not admit the first auxiliary request in the proceedings
(Article 13(1) RPBA).

As a result, the respondent's request to
remit the case to the department of the first instance on the basis of
this request cannot be granted either.

6. Objection under Rule 106 EPC

6.1
At the oral proceedings, after the Board informed the parties about the
conclusion of its deliberation to not admit the first auxiliary request
in the proceedings, the respondent raised an objection under Rule 106
EPC on the grounds that the proceedings was not fair since, on one hand
D13(O) and D14 were admitted in the proceedings, with their late filed
certified translations, two days before the oral proceedings for D13(0),
while on the other hand the first auxiliary request restricted to the
process claims of the patent as granted, i.e. claims already in the
proceedings from the very beginning, was not admitted in the
proceedings. Furthermore, its right to be heard was violated since it
had not enough time for contacting and discussing the late filed
certified translation of D13(O) with its client as two working days were
certainly not sufficient.

6.2 However, the respondent did not add
any further arguments with respect to those already discussed, on one
hand, for the admission of the late filed documents D13(O), D14 and
their translations D13(O)', D13(O)", D14' and D14" and, on the other
hand, the admissibility of the first auxiliary request.

The
respondent's unsubstantiated objection did not point to any procedural
deficiency to be remedied. In view of this objection, the Board did not
see a reason to change its findings on the substantive issues which had
already been discussed.

As put forward above, the Board applied
the appropriate criteria independently for exercising its discretionary
power in deciding on the admission of, on one hand, the late filed
documents and, on the other hand, of the first auxiliary request. A fair
treatment does not require that a party losing on one issue should win
on the next one in order to obtain a balanced situation. In order to
safeguard fairness, each issue subject to the Board's discretionary
power has to be and has presently been decided by applying the
appropriate criteria for each issue independently. This is exactly how
the Board proceeded. Consequently, it could not find any lack of
fairness to be remedied.

Concerning the alleged violation of the
right to be heard, as already referred to above, the late filed
certified translation of D13(0) (=D13(O)") did not add any technical
information that the respondent could not have found and understood in
the machine translation D13(O)' for it to revert and discuss with its
client within one month before the oral proceedings. In the annex to the
summons for oral proceedings, the Board explicitly mentioned D13(O) as
potentially relevant for inventive step with even an invitation for
filing a translation, so that the respondent could not simply ignore
D13(O)' in its preparation for the oral proceedings. For the Board, the
objection based on only two days having been available for the
preparation for the oral proceedings could therefore not hold.

The
respondent was made aware of the grounds which were intended to
substantiate both issues - admission of late filed documents and their
translations; inadmissibility of the first auxiliary request - and had
obviously opportunities, at least during the oral proceedings, to take
position on both issues. Its comments made in using these opportunities
were carefully considered by the Board.

Consequently, the respondent's
right to be heard according to Article 113(1) EPC was safeguarded (see
Case Law of the Boards of Appeal, 7th Edition 2013, III.B.1.1, 1.2,
2.1.1 b)).

As a result, the Board dismissed the objection.

7. Second auxiliary request - Admissibility in the proceedings

7.1
Like the first auxiliary request, the respondent filed the second
auxiliary request at the very beginning of the oral proceedings.

As
a result of the late filing, the admission of the second auxiliary
request in the proceedings is subject to the discretionary power of the
Board as set out in Article 13(1) RPBA.

7.2 Amendments (Articles 123(2) and (3) EPC)
Claim
1 of the second auxiliary request corresponds to the combination of
independent process claim 16 and dependent claim 22 of the patent as
granted; dependent claims 2-8 of the second auxiliary request are based
on dependent claims 17-21, 23-24 of the patent as granted.
The
replacement in claim 1 of "container" by "package" is disclosed for
instance in the description of the application as originally filed,
column 1, lines 3-7, or in original claim 22.
The requirements of Articles 123(2) and (3) EPC are therefore fulfilled. This was not contested by the appellant.

7.3 Prima facie allowability

7.3.1
For the same reasons as for the first auxiliary request, as a matter of
procedural economy concern, the Board examined whether the new late
filed request would enable prima facie to overcome the objection
regarded as validly raised against the main request.

7.3.2 The respondent argued that the following feature of claim 1:
"the
sizes and the label text of the packaging line packages can be varied
from one package to another even more times or in a continuous way,
without interrupting the production cycle."
would enable prima facie to overcome the objection of lack of inventive step.
It
argued that none of the documents D13(O) and D7A discloses this
feature. In particular, the machine of D13(O) explicitly continuously
produces the same label, which is contrary to claim 1 (D13(O)', page 1,
lines 4-6 or D13(O)", page 1, lines 24-25).

7.3.3 This was not
contested by the appellant which put forward that the respondent had
more than one month after having received the machine translation
D13(O)' to react and file its auxiliary request. Consequently, such a
late filed request should not be admitted in the proceedings.

7.3.4
The Board, however, shares the respondent's view that the appellant
could not be surprised by a combination of features from claims of the
patent as granted, especially when the features taken from the dependent
claim (claim 22 in present case) relate to the core of the discussion
in opposition and appeal proceedings (see impugned decision, points 22
and 23.3; statement of grounds of appeal, point 5.2 iii)). Since, on one
hand, the combination of D13(O) and D7A does not appear prima facie to
lead the skilled person in an obvious manner to the subject-matter of
claim 1 of the second auxiliary request and, on the other hand, the new
set of claims does not appear to introduce new issue(s) which would have
not been discussed so far in the proceedings, the Board does not see
any reason to not admit the second auxiliary request in the proceedings.

7.3.5
The decision under appeal dealt exclusively with the machine claims of
the patent as granted, which are no longer comprised in the second
auxiliary request of the respondent. Therefore, taking into account that
the set of process claims according to the second auxiliary request
appears prima facie to overcome the lack of inventive step objections
raised in the course of the appeal proceedings, the Board considers it
appropriate to exercise its discretion under Article 111(1) EPC to remit
the case to the Opposition Division for further prosecution on its
basis.

Since "prima facie" merely sets a first hurdle by
definition, the Opposition Division will have to consider in the course
of the further prosecution, inter alia, whether the claims of the second
auxiliary request actually comply with the requirements of Article 56
EPC.

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2.
The case is remitted to the first instance for further prosecution on
the basis of the second auxiliary request (claims 1 to 8) filed during
the oral proceedings on 21 May 2014.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T218210.20140521. The whole decision can be found here. The file wrapper can be found here. Photo by Kanko obtained via Flickr.